DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2/5/2026 has been entered.
Claim(s) 1-15, are pending in the application.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Instant specification states (a1) copolymers containing polyester blocks and polyether blocks in multiple citations, e.g., abstract, [0012], [0045], etc.. rather than the limitation “consisting of” as set forth by instant claim 1. Moreover, there are no known citations in instant specification of (a1) copolymer consisting of polyester blocks and polyether blocks.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-10 and 12-14 are rejected under 35 U.S.C. 103 as unpatentable over US5543489 to Alex et al.
Regarding Claim 1, 4, and 5, Alex teaches a composition based on thermoplastic elastomers [Abstract] comprising 90 parts of a PEBAX (polyether block amide) [Example 1] (i.e., 75-98% copolyetherester) as a block copolymer [Col.1, lines 64-67] comprising PTMG [Col.4 Lines 30-35] which is considered hydrophilic (reading on Polymer A, (a1)). Alex further teaches 10 parts terpolymer [Example 1] comprising ethylene/acrylic ester/maleic anhydride comprising a ratio of 68% ethylene / 30% acrylic ester / and 2% maleic anhydride [Col.4 lines 37-43] reading on 10 parts copolymer B comprising ethylene, alkyl (meth)acrylate / and an anhydride. Alex further teaches 0% of at least one additive relative to the weight of the composition. The Example 1 of Alex only contains the polyetheresteramine at 90 parts and the terpolymer at 10 parts thereby reading on the “consisting of” language as required by the instant claim.
Alex does not teach in this particular embodiment that the copolyetherester consists of only polyester blocks and polyether blocks.
However, Alex teaches the thermoplastic elastomer block copolymer comprises polyether blocks and blocks selected from the group consisting of polyamide blocks and polyester blocks [abstract] e.g., the thermoplastic elastomer contains both polyether blocks and polyester blocks [Col1, L64-66] (i.e., polyetheresters) or the thermoplastic elastomer contains both polyamide blocks and polyether blocks [col2, L43-45] (polyetheresteramide).
Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to substitute the copolyetherester consisting of polyester blocks and polyether blocks for the polyetheresteramide of Example 1. The motivation would have been that it is obvious to substitute equivalents known for the same purpose. (MPEP 2144.06). Alex discloses that both polyetheresters and polyetheresteramide are suitable thermoplastic elastomers for use in compositions based on a thermoplastic elastomer, thus providing evidence of obviousness in substituting one for the other in such compositions.
Alex does not explicitly state the copolyetherester polymer is hydrophilic.
However, the property of hydrophilicity is a function of the copolymer. Alex teaches the same copolymer comprising polyester blocks and polyether blocks as set forth in the rejection above. Therefore, the hydrophilic nature of the copolymer of Alex will be the same hydrophilicity as required by the instant claims. Case law has held that claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed composition, as the reference teaches each of the claimed ingredients within the claimed proportions for the same utility.
Regarding Claims 2 and 3, Alex teaches the composition of claim 1, comprising a commercially available copolymer such as LOTADER from Elf Atochem S.A. [Example 1] wherein LOTADER comprises ethyl acrylate or butyl acrylate.
Regarding Claim 6, Alex teaches the composition of claim 1, comprising maleic anhydride [Example 1] i.e., an unsaturated dicarboxylc acid anhydride.
Regarding Claim 7, Alex teaches the composition of claim 1, wherein the anhydride can comprise unsaturated glycidylic monomer acid anhydride [Col.4, line 1-4] reading on an unsaturated epoxide function.
Regarding Claim 8, Alex teaches the composition of claim 1, wherein copolymer B is free of units derived from vinyl acetate.
Regarding Claim 9, Alex teaches the composition of claim 1, comprising 0% additive chosen from inert dyes.
Regarding Claim 10, 12, and 13, Alex teaches the method of manufacturing an article by extrusion or hot molded [claim 10] such as the composition of claim 1 made into a film [Col.4, line 23].
Regarding Claim 14, Alex teaches the film of claim 13, wherein the film is at least 100 microns [Col.4, line 23].
Claim Rejections - 35 USC § 103
Claims 11 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over US5543489 to Alex et al.
Regarding Claim 11, Alex teaches the process in claim 10 as set forth above and incorporated herein by references.
Alex is silent regarding the extrusion temperature.
However, case law has held that differences in temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such temperature is critical. The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of ranges is the optimum combination of values (MPEP 2144.05.II.A.). This decision is clearly analogous to other process parameters. Where the principal difference between the claimed process and that taught by the reference is a temperature difference, it is incumbent upon applicant to establish criticality of that difference (see Ex parte Khusid, 174 USPQ 59).
Regarding Claim 15, Alex teaches the film as claimed in claim 14.
Alex is silent regarding the use of the film.
However, case law has held that a recitation with respect to the manner in which a claim apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations (Ex Parte Masham, 2 USPQ2d 1647 (1987). Since Alex teaches the same film obtained by the same process as set forth in the rejection above, then the film taught by Alex is considered to meet the structural limitations and thereby read on the intended use of the film as required by the claim.
Response to Arguments
Applicant's arguments filed 01/27/2026 have been fully considered but they are not persuasive.
Applicant states that Alex does not teach or suggest the claimed copolyetherester.
In response, attention is drawn to the updated rejection of claim 1 as set forth above, wherein Alex teaches all limitations of claim 1, including the component (a1) copolyetheresters, wherein the copolyetheresters consist of polyester blocks and polyether blocks.
For these reasons, Applicant's arguments are not persuasive.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVIN MITCHELL DARLING whose telephone number is (703)756-5411. The examiner can normally be reached Monday - Friday 7:30am - 5:00pm.
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/DEVIN MITCHELL DARLING/Examiner, Art Unit 1764
/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764